Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 82
`Entered: February 2, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LIQUIDIA TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`Patent Owner.
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, CHRISTOPHER M. KAISER,
`and DAVID COTTA, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 82
`Entered: February 2, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LIQUIDIA TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`Patent Owner.
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, CHRISTOPHER M. KAISER,
`and DAVID COTTA, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`INTRODUCTION
`Liquidia Technologies, Inc. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting an inter partes review of claims 1–8 of U.S. Patent
`No. 10,716,793 B2 (Ex. 1001, “the ’793 patent”). United Therapeutics
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 13
`(“Prelim. Resp.”).
`On August 11, 2021, we instituted inter partes review of claims 1–8
`of the ’793 patent on all grounds set forth in the Petition. Paper 18 (“Inst.
`Dec.”). After institution of trial, Patent Owner filed a Response (Paper 29,
`“PO Resp.”), Petitioner filed a Reply (Paper 44), and Patent Owner filed a
`Sur-Reply (Paper 55). In addition, both parties filed Motions to Exclude
`Evidence (Papers 65 and 66), Oppositions to their respective opponents’
`Motions to Exclude (Papers 68 and 69), and Replies in support of their own
`Motions to Exclude (Papers 71 and 72). At the request of both parties, we
`held an oral hearing, the transcript of which was entered into the record.
`Paper 77 (“Tr.”).
`On July 19, 2022, we issued a Final Written Decision determining that
`Petitioner had proven by a preponderance of evidence that all the challenged
`claims were unpatentable. Paper 78 (“Final Dec.”). On August 18, 2022,
`Patent Owner requested rehearing and filed a request that rehearing be
`conducted by the Precedential Opinion Panel. Paper 79 (“Req. Reh’g”);
`Paper 80. The request for rehearing by the Precedential Opinion Panel was
`denied, returning jurisdiction to us to consider the rehearing request itself.
`Paper 81.
`For the reasons discussed below, we deny Patent Owner’s Request for
`Rehearing. Where the present decision differs from the Final Written
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`Decision, the present decision controls. Otherwise, the Final Written
`Decision remains in force.
`
`ANALYSIS
`A. The Final Written Decision
`Petitioner asserted the unpatentability of the challenged claims on six
`separate grounds. Final Dec. 3–4. Four of those grounds relied on
`references referred to as Voswinckel 2006 and Ghofrani, both of which we
`determined did not qualify as prior art. Id. at 3–4, 36–41. The remaining
`two grounds both relied on a reference referred to as Voswinckel JESC, and
`one of the grounds also relied on a reference referred to as Voswinckel
`JAHA. Id. at 3.
`Patent Owner argued during the trial that Petitioner had not proven
`that either Voswinckel JESC or Voswinckel JAHA had been made publicly
`accessible early enough to qualify as prior art in the way that Petitioner
`argued they did. PO Resp. 11–18; Sur-Reply 2–11. Petitioner countered
`these arguments with several arguments for the public accessibility of
`Voswinckel JESC and Voswinckel JAHA. Reply 2–9. In particular,
`Petitioner argued that each of these references was cited in a publicly
`available journal article that could have served as a research aid to help a
`person of ordinary skill in the art locate the references. Id. at 3–4 (arguing
`that Voswinckel JESC was cited in Ghofrani), 7–8 (arguing that Voswinckel
`JAHA was cited in Sulica).
`In the Final Written Decision, we were persuaded by Petitioner’s
`argument regarding these research aids. Final Dec. 10–12. Based in part on
`our determination that these research aids established the public accessibility
`of Voswinckel JESC and Voswinckel JAHA, we determined that Petitioner
`
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`had proven by a preponderance of the evidence that each of the challenged
`claims would have been obvious over the combination of the ’212 patent,
`Voswinckel JESC, and Voswinckel JAHA. Id. at 12–35.
`
`B. The Rehearing Request
`Patent Owner seeks rehearing of our Final Written Decision on the
`ground that we overlooked Patent Owner’s argument that the Ghofrani and
`Sulica research aids had been “published after the critical §102(b) date of
`May 15, 2005.” Req. Reh’g 1 (emphasis in original). Patent Owner notes
`that this argument appeared in the Sur-Reply. Id. at 5 (citing Sur-Reply 9).
`According to Patent Owner, had we not overlooked this argument, we would
`have determined that Petitioner had not shown that Voswinckel JESC and
`Voswinckel JAHA were publicly accessible in the way necessary to treat
`them as prior art to the ’793 patent. Id. at 5–14.
`When it requested rehearing, Patent Owner also requested that the
`rehearing be conducted by the Precedential Opinion Panel. Ex. 3003. The
`Precedential Opinion Panel denied that request and directed us to consider
`Patent Owner’s rehearing request. Paper 81, 3. The Precedential Opinion
`Panel directed us, “in [our] consideration on rehearing, to clearly identify
`whether the Voswinckel JESC and Voswinckel JAHA references qualify as
`prior art” and specified that “[s]uch analysis shall clarify whether the relied
`upon research aids were available prior to the critical date and whether the
`Voswinckel JESC and Voswinckel JAHA references were publicly
`accessible by way of their presentation and/or inclusion in distributed
`materials, such as at a conference or library.” Id.
`
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`
`C. Standard of Review
`A request for rehearing of an institution decision is reviewed under
`the abuse of discretion standard. 37 C.F.R. § 42.71(c). “The burden of
`showing a decision should be modified lies with the party challenging the
`decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, reply, or a sur-reply.” Id. An abuse of discretion may be found
`where a decision “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is
`based on an erroneous conclusion of law; (3) rests on clearly erroneous fact
`findings; or (4) involves a record that contains no evidence on which the
`Board could rationally base its decision.” Redline Detection, LLC v. Star
`Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v.
`Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)).
`
`D. We Overlooked Patent Owner’s Argument
`Patent Owner is correct that its argument that the Ghofrani and Sulica
`research aids were dated after May 15, 2005, appeared in the Sur-Reply.
`Sur-Reply 9–11. Patent Owner also is correct that we overlooked this
`argument in relying on these research aids as supporting that Petitioner had
`established that Voswinckel JESC and Voswinckel JAHA were prior art to
`the ’793 patent. Final Dec. 11–12; Paper 81, 2 (“the Board’s analysis did
`not consider whether the research aids themselves were available prior to the
`critical date”).
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`
`E. Reconsideration of the Record Shows that the Research Aids Did
`Not Establish the Prior-Art Status of Voswinckel JESC and
`Voswinckel JAHA
`Petitioner argued that Voswinckel JESC and Voswinckel JAHA were
`“prior art to the ’793 Patent under at least 35 U.S.C. § 102(b).” Pet. 22, 24.
`In the Final Written Decision, we determined that Petitioner had shown that
`these references were prior art based on the existence of research aids. Final
`Dec. 10–12. As noted above, that determination overlooked Patent Owner’s
`argument that the research aids themselves were published too late for their
`mention of Voswinckel JESC and Voswinckel JAHA to render those
`references prior art under § 102(b). We now consider that argument.
`To qualify as prior art under § 102(b), a reference must have been
`publicly accessible “more than one year prior to the date of application for
`patent in the United States.” 35 U.S.C. § 102(b) (2006). Here, the parties
`agree that the application that ultimately led to the issuance of the ’793
`patent was filed May 15, 2006. Pet. 12; PO Resp. 5. Thus, to qualify as
`§ 102(b) prior art, Voswinckel JESC and Voswinckel JAHA must have been
`publicly accessible before May 15, 2005.
`Petitioner argues that Voswinckel JESC “was cited in the June 2005
`Ghofrani article in the journal Herz . . . , an article that was publicly
`accessible.” Reply 3 (citing Ex. 1010, 298, 301). Patent Owner argues that
`“Ghofrani bears a July 2005 date-stamp.” Sur-Reply 9 (citing Ex. 1121, 1).
`Petitioner does not explain its characterization of Ghofrani as a “June 2005”
`article. The pages of Ghofrani cited by Petitioner do not indicate a
`June 2005 publication date. Ex. 1010, 298, 301. The same article appears,
`however, as Exhibit 1121, which bears a date of July 7, 2005. Compare
`Ex. 1010, with Ex. 1121. Accordingly, Patent Owner’s characterization of
`
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`Ghofrani as having been published in July 2005 is better supported by the
`evidence of record than is Petitioner’s characterization of Ghofrani as having
`been published in June 2005. Even if the evidence of record supported
`Petitioner’s June 2005 publication date, that date is still later than May 15,
`2005, so the citation of Voswinckel JESC in Ghofrani does not show that
`Voswinckel JESC was prior art under § 102(b).
`Petitioner argues that Voswinckel JAHA “was cited by a March 2005
`article authored by Roxana Sulica et al. in the Expert Review of
`Cardiovascular Therapy.” Reply 7 (citing Ex. 1104, 359). Patent Owner
`argues that the Sulica article “shows only the year 2005.” Sur-Reply 9
`(citing Ex. 1104, 347). We agree with Patent Owner. The Sulica article
`bears a 2005 copyright date but otherwise does not indicate when it was
`published. Ex. 1104, 347. The 2005 copyright date does not support a
`finding that the Sulica article was published before May 15, 2005, so the
`citation of Voswinckel JAHA in the Sulica article does not show that
`Voswinckel JAHA was prior art under § 102(b).
`
`F. Reexamination of the Record Shows that Voswinckel JESC and
`Voswinckel JAHA Were Prior Art to the ’793 Patent Due to
`Distribution at Conferences
`The Precedential Opinion Panel directed us, “in [our] consideration on
`rehearing, to clearly identify whether the Voswinckel JESC and Voswinckel
`JAHA references qualify as prior art” and specified that “[s]uch analysis
`shall clarify . . . whether the Voswinckel JESC and Voswinckel JAHA
`references were publicly accessible by way of their presentation and/or
`inclusion in distributed materials, such as at a conference or library.”
`Paper 81, 3. Accordingly, we consider below whether the evidence of
`record establishes the prior-art status of Voswinckel JESC and Voswinckel
`
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`JAHA due to presentation and/or inclusion in distributed materials. We
`answer this question in the affirmative.
`“Because there are many ways in which a reference may be
`disseminated to the interested public, ‘public accessibility’ has been called
`the touch-stone in determining whether a reference constitutes a ‘printed
`publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347,
`1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
`1986)). A reference is considered publicly accessible if it was “disseminated
`or otherwise made available to the extent that persons interested and
`ordinarily skilled in the subject matter or art, exercising reasonable
`diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221,
`226 (CCPA 1981)). Under at least some circumstances, a reference may be
`a printed publication under § 102(b) if it was “displayed to the public,” even
`if it “was not later indexed in any database, catalog, or library.” In re
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). There are several
`factors relating to whether such a display is sufficient to constitute a printed
`publication, including “the length of time the display was exhibited, the
`expertise of the target audience, the existence (or lack thereof) of reasonable
`expectations that the material displayed would not be copied, and the
`simplicity or ease with which the material displayed could have been
`copied.” Id. In addition, distribution of a reference at a professional
`conference may, under at least some circumstances, constitute sufficient
`dissemination to show public accessibility. Nobel Biocare Services AG v.
`Instradent USA, Inc., 903 F.3d 1365, 1375–80 (Fed. Cir. 2018); Medtronic,
`Inc. v. Barry, 891 F.3d 1368, 1380–83 (Fed. Cir. 2018).
`
`8
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`
`1. Voswinckel JESC Was Sufficiently Distributed at a
`Conference to be Publicly Accessible as of the Conference
`Date
`A reference may be “[a] printed publication ‘ . . . if it was sufficiently
`disseminated at the time of its publication.’” Medtronic, 891 F.3d at 1381
`(quoting Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir.
`2014)). Several factors are relevant to the determination of whether
`distribution of a reference at a conference constitutes such sufficient
`dissemination. Id. at 1381–82. These include “the size and nature of the
`meetings and whether they are open to people interested in the subject
`matter of the material disclosed,” as well as “whether there is an expectation
`of confidentiality between the distributor and the recipients of the materials.”
`Id. at 1382. “The expertise of the target audience can [also] be a factor in
`determining public accessibility.” Id. To the extent that these factors are
`addressed via testimonial evidence, corroboration of that evidence may be
`necessary. Nobel Biocare, 903 F.3d at 1377–78. “Corroborating evidence
`may include documentary or testimonial evidence,” and “[c]ircumstantial
`evidence can be sufficient corroboration.” Id. (citing TransWeb, LLC v. 3M
`Innovative Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016)).
`Voswinckel JESC is an abstract contained in “Volume 25 Abstract
`Supplement August/September 2004” of “European Heart Journal,” with a
`subtitle indicating that the journal is the “Journal of the European Society of
`Cardiology” and that the supplement relates to “ESC Congress 2004,” held
`“28 August – 1 September” in “Munich, Germany.” Ex. 1007, 1; see also
`Ex. 1089, 1. The Table of Contents organizes abstracts into categories,
`including “Epidemiology and treatment of pulmonary arterial hypertension,”
`with each category associated with an entry corresponding to a day of the
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`conference, such as “Day 2—Sunday 29 August 2004.” Id. at 2. Each of
`these categories points to a page or pages in the supplement, with those
`pages containing abstracts that report the “Background,” “Methods,”
`“Results,” and “Conclusion” of studies. Id. at 7.
`The conference with which Voswinckel JESC is associated “is the
`largest medical congress in Europe and among the top three cardiology
`meetings in the world,” and “it has become an established forum for the
`exchange of science as much as education.” Ex. 1105, 19. Attendees of the
`conference include “basic scientists, nurses and allied professionals working
`in the field of cardiovascular care of patients.” Id. At the 2004 conference,
`there were “24,527 attendees,” including “18,413 professionals, 4,715
`exhibitors, 636 journalists and 763 accompanying persons.” Id. Both
`Petitioner’s declarant, Dr. Nicholas Hill, and Patent Owner’s declarant,
`Dr. Aaron Waxman, testify that anyone who paid to attend the ESC
`Congress 2004 would have received a copy of the abstract book from which
`Voswinckel JESC is excerpted, either at the meeting itself or as a
`distribution before the meeting. Ex. 1106 ¶ 28; Ex. 1108, 105:16–108:1.
`Thus, the evidence of record shows that Voswinckel JESC was
`distributed to more than twenty thousand people before or at the time of the
`ESC Congress 2004 in late August and early September of 2004. Those
`twenty thousand recipients included both highly skilled professionals,
`including scientists, nurses, and other clinicians, as well as journalists and
`those who accompanied the professionals and the journalists. That the
`recipients included journalists and “accompanying persons” suggests very
`strongly that there was no expectation that the contents of Voswinckel JESC
`would be kept confidential. Moreover, Drs. Hill and Waxman corroborate
`
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`
`one another’s testimony, and their testimony is further corroborated by the
`contents of both Voswinckel JESC itself and Exhibit 1105. The distribution
`of Voswinckel JESC to over twenty thousand recipients, including
`thousands of experts in the field of cardiology, with no expectation of
`confidentiality, establishes that Voswinckel JESC was a printed publication
`as of the date of the conference at which that distribution occurred. Because
`that conference occurred in August and September 2004, more than one year
`before the May 15, 2006 application date of the ’793 patent, Voswinckel
`JESC was a printed publication early enough to qualify as prior art under 35
`U.S.C. § 102(b).
`
`2. Voswinckel JAHA Was Sufficiently Distributed at a
`Conference to be Publicly Accessible as of the Conference
`Date
`Like Voswinckel JESC, Voswinckel JAHA is associated with a
`professional conference. Ex. 1008. It is an abstract that has been extracted
`from a document headed “Supplement to Circulation,” subtitled “Journal of
`the American Heart Association” and “Abstracts from Scientific Sessions
`2004,” indicating that those sessions occurred “November 7–10.” Id. at 1.
`The abstract in question appears in a section titled “Pulmonary Arterial
`Hypertension: New Therapies,” subtitled “Subspecialty: Integrative
`Biology” and indicating that the session occurred on “Wednesday” in “Hall
`I2” of the “Ernest N Morial Convention Center.” Id. at 3. We take official
`notice that the range of dates from November 7, 2004, to November 10,
`2004, includes Wednesday, November 10, 2004.
`Both Dr. Hill and Dr. Waxman agree that attendance at the Scientific
`Sessions 2004 conference was large. Ex. 1106 ¶ 22 (“a [person of ordinary
`skill in the art] would have attended the Scientific Sessions 2004
`
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`Conference, as it is one of the principal conferences on the circulatory
`system and diseases and conditions affecting circulation”); Ex. 1108, 116:4–
`21 (testifying that attendance at Scientific Sessions 2004 was likely larger
`than the 18,000 professionals who attended ESC Congress 2004). Dr. Hill
`testifies that the conference was “attended by physicians and researchers
`working on and studying the cardiovascular system, including pulmonary
`circulation.” Id. Both Dr. Hill and Dr. Waxman also agree that a copy of
`the abstract book from which Voswinckel JAHA is excerpted would have
`been provided to all attendees at Scientific Sessions 2004. Ex. 1106 ¶ 23;
`Ex. 1108, 108:3–20. We have not been directed to any evidence of record
`indicating there was any expectation of confidentiality. The distribution of
`thousands of copies of Voswinckel JAHA at the conference is strong
`evidence that Voswinckel JAHA was a printed publication as of the date of
`the conference. Because that conference occurred in November 2004, more
`than one year before the May 15, 2006 application date of the ’793 patent,
`Voswinckel JAHA was a printed publication early enough to qualify as prior
`art under 35 U.S.C. § 102(b).
`
`3. Conclusion
`As instructed by the Precedential Opinion Panel, we have considered
`“whether the Voswinckel JESC and Voswinckel JAHA references qualify as
`prior art” and in particular “whether the Voswinckel JESC and Voswinckel
`JAHA references were publicly accessible by way of their presentation
`and/or inclusion in distributed materials, such as at a conference.” Paper 81,
`3. As discussed above, we find that both references were distributed
`sufficiently at professional conferences to be publicly accessible at the time
`of those conferences. By virtue of this public accessibility, both Voswinckel
`
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`JESC and Voswinckel JAHA were printed publications early enough to
`qualify as prior art under 35 U.S.C. § 102(b).
`
`G. Asserted Obviousness over ’212 Patent, Voswinckel JESC, and
`Voswinckel JAHA
`Petitioner argues that claims 1–8 would have been obvious over the
`combination of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA.
`Pet. 30–46. As discussed above, Petitioner has shown by a preponderance of
`the evidence that both Voswinckel JESC or Voswinckel JAHA qualify as
`prior art. Accordingly, we do not disturb the obviousness analysis in the
`Final Written Decision, which relies on the prior-art status of Voswinckel
`JESC and Voswinckel JAHA. Final Dec. 12–35.
`
`H. Remaining Grounds
`Petitioner argues that claims 1–8 would have been obvious over the
`combination of the ’212 patent and Voswinckel JESC. Pet. 46–50. We do
`not disturb the determination in the Final Written Decision that we need not
`reach this ground “[b]ecause Petitioner has shown by a preponderance of the
`evidence that all of the challenged claims would have been obvious over the
`similar combination of the ’212 patent, Voswinckel JESC, and Voswinckel
`JAHA.” Final Dec. 36.
`Petitioner argues that claim 1 was anticipated by Ghofrani; that
`claims 1, 3, and 8 would have been obvious over the combination of
`Voswinckel JAHA and Ghofrani; that claims 1 and 3 were anticipated by
`Voswinckel 2006; and that claims 2 and 4–8 would have been obvious over
`the combination of Voswinckel 2006 and the ’212 patent. Pet. 50–64.
`These grounds fail for the reasons discussed in the Final Written Decision.
`Final Dec. 36–41.
`
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`
`CONCLUSION1
`For the reasons discussed above, Patent Owner has shown that we
`overlooked its argument regarding the date of availability of the research
`aids that Petitioner argued showed that Voswinckel JESC and Voswinckel
`JAHA qualified as prior art. A proper consideration of that argument shows
`that the research aids do not establish the prior-art status of Voswinckel
`JESC and Voswinckel JAHA, but there is no change to the outcome with
`respect to Petitioner’s asserted grounds of unpatentability, because the
`distribution of Voswinckel JESC and Voswinckel JAHA at professional
`conferences proves the prior-art status of those references. Accordingly, we
`deny Patent Owner’s request for rehearing.
`When all arguments are properly considered, Petitioner has shown by
`a preponderance of the evidence that claims 1–8 of the ’793 patent are
`unpatentable.
`
`Claims
`
`1–8
`
`Outcome of Decision on Rehearing:
`35 U.S.C
`Reference(s)/Basis Denied
`§
`103(a)
`
`1–8
`
`Granted
`
`
`
`’212 patent,
`Voswinckel JESC,
`Voswinckel JAHA
`
`
`
`
`1–8
`
`
`
`Overall
`Outcome
`
`1 Should Patent Owner wish to pursue amendment of the challenged claims
`in a reissue or reexamination proceeding subsequent to the issuance of this
`Decision, we draw Patent Owner’s attention to the April 2019 Notice
`Regarding Options for Amendments by Patent Owner Through Reissue or
`Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
`16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
`or a request for reexamination of the challenged patent, we remind Patent
`Owner of its continuing obligation to notify the Board of any such related
`matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
`
`14
`
`
`
`1–8
`
`1–8
`
`1
`1, 3, 8
`
`1, 3
`2, 4–8
`
`103(a)
`
`’212 patent,
`Voswinckel JESC,
`Voswinckel JAHA
`’212 patent,
`Voswinckel JESC2
`102(a) Ghofrani
`103(a) Voswinckel
`JAHA, Ghofrani
`102(a) Voswinckel 2006
`103(a) Voswinckel 2006,
`’212 patent
`
`
`
`
`
`
`
`
`
`
`1–8
`
`
`
`1
`1, 3, 8
`
`1, 3
`2, 4–8
`
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`Claims
`
`Reference(s)/Basis
`
`
`Final Outcome of Final Written Decision after Rehearing:
`35
`Claims
`Claims Not
`U.S.C.
`Shown
`Shown
`§
`Unpatentable
`Unpatentable
`103(a)
`1–8
`
`
`Overall
`Outcome
`
`
`
`
`
`ORDER
`
`It is hereby
`ORDERED that Patent Owner’s Request for Rehearing is denied;
`FURTHER ORDERED that the determination in the Final Written
`Decision that the research aids relied on by Petitioner show the prior-art
`status of Voswinckel JESC and Voswinckel JAHA is overturned and
`replaced with the determination in the present decision that the distribution
`
`
`2 Neither the Final Written Decision nor this Rehearing Decision reaches this
`ground because Petitioner has proven all challenged claims are unpatentable
`based on obviousness over the combination of the ’212 patent, Voswinckel
`JESC, and Voswinckel JAHA.
`
`15
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`of Voswinckel JESC and Voswinckel JAHA at professional conferences
`establishes the prior-art status of those references;
`FURTHER ORDERED that, based on the preponderance of the
`evidence, claims 1–8 of the ’793 patent have been shown to be unpatentable;
`FURTHER ORDERED that all other rulings in the Final Written
`Decision remain undisturbed; and
`FURTHER ORDERED that parties to this proceeding seeking judicial
`review of this Decision must comply with the notice and service
`requirements of 37 C.F.R. § 90.2.
`
`
`
`
`
`16
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`For PETITIONER:
`Ivor R. Elrifi
`Erik B. Milch
`Deepa Kannappan
`Sanya Sukduang
`Lauren Krickl
`Douglas Cheek
`Jonathan Davies
`COOLEY LLP
`ielrifi@cooley.com
`emilch@cooley.com
`dkannappan@cooley.com
`ssukduang@cooley.com
`lkrickl@cooley.com
`dcheek@cooley.com
`jdavies@cooley.com
`
`For PATENT OWNER:
`Stephen B. Maebius
`George Quillin
`Jason N. Mock
`Michael Houston
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`jmock@foley.com
`mhouston@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas Carsten
`April E. Weisbruch
`Judy Mohr
`Jiaxiao Zhang
`Mandy Kim
`
`17
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`Arthur Dykhuis
`Amy Mahan
`MCDERMOTT WILL & EMERY LLP
`dcarsten@mwe.com
`aweisbruch@mwe.com
`jmohr@mwe.com
`jazhang@mwe.com
`mhkim@mwe.com
`adykhuis@mwe.com
`amahan@mwe.com
`
`
`
`18
`
`
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